Executive summary: I received a nice phone call from a high-up person in the office of the Commissioner for Trademarks at the USPTO about the post office box policy. Continue reading “The Trademark Office and Post Office Boxes”
Which ISAs do US filers choose?
WIPO provides a very nice statistics lookup tool on its web site. I used that tool to make this pie chart showing the International Searching Authorities that were chosen in 2018 by filers in RO/US. Continue reading “Which ISAs do US filers choose?”
Maybe your firm can now use Zelle to make payments
In this blog article I said “Zelle cannot be used by a business”. Recently, however, some banks that belong to Zelle, which is a money transfer service, have begun allowing businesses to use Zelle. This article discusses this change. Continue reading “Maybe your firm can now use Zelle to make payments”
Many ISA fees changing in a few weeks
For US filers, many International Searching Authority fees will change in the next few weeks. Continue reading “Many ISA fees changing in a few weeks”
What is ROROP?
ROROP is Restoration of the Right of Priority. Continue reading “What is ROROP?”
Monitoring status of US patent applications redux
Today for the very first time I received an email from the MyUSPTO widget telling me that the status of one of my monitored files has changed. This is really a big deal.
I am delighted to report that somebody at the USPTO has made some progress in getting the Patent Docket widget in the MyUSPTO system working. As I say, today I actually received an an email notification that the status had changed in a case that I am monitoring in the widget. Whoever you are at the USPTO, thank you!
I blogged about this system and how it did not work at all well over the past two years. Now it seems to be working at least a little.
For readers, here is the encouraging news. You might be able to start using the MyUSPTO Patent Docket widget as an adjunct to your other mechanisms for monitoring status of US patent applications.
Continue reading “Monitoring status of US patent applications redux”
Ohio State University’s trademark application fares poorly
Readers will recall my blog articles here and here and here about Ohio State University’s ill-fated attempt to obtain a trademark registration for the word “the”. Now there is an Office Action which you can see here.
As I predicted, the Examining Attorney refused registration because the specimens of use show the mark as “merely ornamental”.
And as I also predicted, the Examining Attorney also refused registration in view of the earlier trademark filing by clothing designer Marc Jacobs. Continue reading “Ohio State University’s trademark application fares poorly”
Worthwhile recording after the three months has passed?
An earlier blog article discussed whether the USPTO will record an assignment of a PCT application even if it was filed in a Receiving Office other than RO/US (the answer is “yes”). In that article I also pointed out that if you are in possession of a signed assignment of a PCT application, you ought to record it within three months of when it was signed, and you ought not to postpone recordation until such time as the US national phase is entered (35 USC § 261). This prompted a loyal reader to ask:
Would you record an assignment for a PCT case, even if it has been signed, say, 5 or 6 months ago? Way more than the three months during which it “should” have been recorded?
One of my clients does have a standing procedure according to which a PCT assignment is signed right after filing, however, the assignment is merely kept in the file and never submitted during the International Stage. Only if/when National Phase is entered, will said assignment be sent to the various associates for recordation. Some accept it, others want new ones anyway.
So, during the course of some “housekeeping” I came across several signed PCT assignments which had never been recorded. Should I submit them now, even the three months have long gone?
The answer is yes.
First, even if the practitioner has failed to follow Best Practice by recording within three months, there is still an enormous benefit to recording rather than failing to record. Recordation, even if done tardy, still offers some of the benefits set forth in 35 USC § 261. It will still, for example, trump a later-recorded assignment on many fact patterns.
You mention that an associate might “want a new assignment anyway”. This is nuts. If the inventor previously signed some assignment, then as of that moment the inventor ceased to own anything. If you were to ask that inventor to sign “a new assignment anyway”, the new assignment would probably be a nullity.
Recording at USPTO for a PCT that was not filed in RO/US?
A loyal reader asks:
If we have a PCT application filed in a receiving office other than the USPTO, will the USPTO record an assignment against that PCT application in advance of US national phase entry?
For example: For PCT/CN2019/123456, I have an executed English language assignment. If I file it via EPAS with the CN PCT number, will the USPTO record it?
The USPTO will record any document affecting title with respect to any US patent application. And any PCT application that designates the US counts as a US patent application (35 USC § 363) regardless of whether or not the US national phase has been entered. From this it follows automatically that the USPTO will record any document affecting title with respect to any PCT application that designates the US. (Socrates is a man, all men are mortal, therefore Socrates is mortal, that kind of thing.) You get the same answer to this question no matter which Receiving Office happens to have been selected by the filer. And it is the same answer regardless of whether the US national phase has or has not been entered. Such a recording may be carried out before the US national phase has been entered, and may be carried out even if the US national phase entry never actually happens. Such a recording may be carried out even after the international phase has ended (in other words, it can happen after the end of the 30-month period).
Actually nobody at the USPTO, no computer system at the USPTO, ever actually checks to see whether the PCT application actually designates the US. Thus actual observed behavior is that the USPTO will record any document affecting title with respect to any PCT application no matter whether or not it designates the US.
And of course the recordation is free of charge — no government fee.
And of course anyone can carry out the recordation — there is no requirement that the filer be a registered practitioner or have an address in the US.
Which then brings us to 35 USC § 261, which reminds that it is a Best Practice (indeed almost malpractice avoidance) to record any assignment within three months of its date of execution. So for example if a PCT application (designating the US) were to be assigned, it would be a Best Practice to record it at the USPTO within three months. This would be the case regardless of the Receiving Office in which it had been filed.
The alert reader might wonder, if we record against the PCT application number, and later enter the US national phase, will the recordation automatically cover the US application number? You can see the answer here.
Getting paid in full when someone sends you a bank wire
Our firm receives many incoming international bank wires every month. These wires come from patent and trademark firms outside the US and they come from corporate clients outside the US. In most cases, the amount of money that we receive matches the amount of money the sender says they sent. But often enough to be annoying, we will receive a wire that is “short”. Sometimes the shortage is $15, sometimes $40, sometimes another amount. Is there a way to eliminate the shortages? This blog article describes something you can do to try to reduce or eliminate the shortages. Continue reading “Getting paid in full when someone sends you a bank wire”